Video Pipeline v. Buena Vista Home Entertainment
| Decision Date | 07 August 2003 |
| Docket Number | Civil No. 00-5236(JBS). |
| Citation | 275 F.Supp.2d 543 |
| Parties | VIDEO PIPELINE, INC., Plaintiff, v. BUENA VISTA HOME ENTERTAINMENT, INC., Defendant. Buena Vista Home Entertainment, Inc. and Miramax Film Corp., Counterclaim-Plaintiffs, v. Video Pipeline, Inc., Counterclaim-Defendant. |
| Court | U.S. District Court — District of New Jersey |
Gary D. Fry, Esquire, Paul R. Fitzmaurice, Esquire, Lisa A. Sabatino, Esquire, Pelino & Lentz, P.C., Philadelphia, PA, for Plaintiff and Counterclaim-Defendant Video Pipeline.
Gary A. Rosen, Esquire, Patrick Madamba, Esquire, Akin, Gump, Strauss, Hauer & Feld, LLP, Philadelphia, PA, for Defendant and Counterclaim-Plaintiff Buena Vista Home Entertainment, Inc. and Counterclaim-Plaintiff Miramax Film Corp.
This case arises out of plaintiff Video Pipeline's use of defendant Buena Vista Home Entertainment's motion picture trailers on the internet, and plaintiff's creation of its own clip previews from defendant's movies, which it streamed to interested customers online. This matter comes before the Court upon plaintiff Video Pipeline's motion for summary judgment on its two counts seeking a declaratory judgment that its actions do not constitute copyright infringement, and on defendant/counterclaim-plaintiff's amended counterclaims. Defendant/counterclaim-plaintiff Buena Vista Home Entertainment also moves for summary judgment on its amended counterclaims brought under the Lanham Act and state law, and partial summary judgment on its federal copyright infringement counterclaim, only with respect to plaintiff's conduct post-December 2000.
For the reasons stated below, plaintiff's motion for summary judgment on its declaratory judgment action will be denied, and its motion for summary judgment on defendant's amended counterclaims will also be denied. Defendant's motion for summary judgment on its amended counterclaims will be granted, and plaintiff will be ordered to return all in-store trailers it received from defendant during 1993 to 2000.
Plaintiff Video Pipeline compiles and organizes movie studios' promotional previews ("trailers"), which are used to promote the sales and rentals of home videos. (Pl.'s Answer to Interrogatory, Pl.'s Ex. C, at No. 4; Disney's Responses to Requests for Admission, Pl.'s Ex. D, at Nos. 2, 4.) Defendant Buena Vista Home Entertainment ("BVHE") is a wholly-owned subsidiary of The Walt Disney Company ("TWDC"), and produces, distributes, and sells home video versions of Disney's copyrighted motion pictures and other entertainment content, including content under the "Buena Vista" name. (McQueen Cert., Def.'s App. Ex. D, ¶¶ 1-2.) TWDC, through another indirect, wholly-owned subsidiary Walt Disney Pictures and Television ("WDPT"), produces and acquires copyrighted motion pictures and other entertainment content under the "Touchstone Pictures," "Hollywood Pictures," "Walt Disney Pictures," and "Walt Disney Television" labels. (BVHE Vice President for Business and Legal Affairs Kristin McQueen Cert., Defs.' App. Ex. D, ¶¶ 1, 2.) Through another indirect, wholly-owned subsidiary Miramax, TWDC produces and acquires copyrighted motion pictures that are distributed under the names "Miramax Films" and "Dimension Films." (McQueen Cert. Defs.' App. Ex. D, ¶ 3.) BVHE is the exclusive licensee of WDPT in the home video market, and is the exclusive domestic distributor for Miramax in the home video market.1 (McQueen Cert., Def.'s App. Ex. D, ¶¶ 2, 3.) ("Disney" hereinafter refers to The Walt Disney Company and its various subsidiaries, including BVHE and Miramax.)
Since 1985, plaintiff has been in the business of aggregating trailers and other promotional material obtained from entertainment companies, including Universal, Warner Bros., Twentieth Century Fox and BVHE and Miramax, into preview programs in videotape format to promote the sales and rentals of their home video products. (Horovitz Aff., Pl.'s App. Ex. E, ¶ 5.) Since 1985, plaintiff has had agreements with more than 2,000 home video wholesalers and retailers to provide them with compiled promotional previews to be shown by the retailers instore, at the point-of-sale. (Id. ¶ 8.) During the first few years, plaintiff had to edit the material it was sent because it contained sales and marketing information not intended for home video customers, and because the content may have been inappropriate for the particular store or neighborhood. (Id. ¶ 6.) In other cases, plaintiff had to combine clips to create previews when it was sent clips or just copies of the entire movie. (Id.) Since 1985, plaintiff has organized trailers from different studios and provided more than 1.1 million trailers on videotape to over 2,000 home video distributors and retailers promoting home video sales and rentals. (Horovitz Aff., Pl.'s App. Ex. E, ¶¶ 8-9; Pl.'s Answer to Interrogatory, Pl.'s Ex. C, at No. 4.)
In 1988, plaintiff entered into a contract with BVHE, called the "Master Clip License Agreement," in which BVHE granted plaintiff permission to use certain trailers as part of plaintiff's videotape preview compilations, displayed in stores to promote home video rentals or sales. The Master Clip License Agreement provided for BVHE to provide plaintiff, the licensee, with trailers to be shown in a manner designated by Disney "from time to time":
This letter constitutes an agreement between Buena Vista Home Video ("Disney") and Video Pipeline, Inc. ("Licensee") in connection with Disney's grant to Licensee of permission to use certain three-quarter inch (3/4") broadcast quality videotape masters of certain clips as shall be designated by Disney from time to time (the "Videos") in connection with the preview tapes to be created for such uses as Disney shall designate from time to time (the "Programs"), upon the terms and conditions set forth herein: Subject to the terms and conditions provided herein, Disney hereby delivers the Videos to Licensee and grants to Licensee the non-exclusive right to exhibit the Videos (i.e., the clips contained on the above referenced masters) on the Programs and for no other purpose. Licensee is expressly prohibited from selling the Videos to any third party or from exhibiting it in any manner other than as provided herein.
The term of this Agreement will commence as of the date hereof and end upon the Licensee's completion of the Programs.
Licensee is expressly prohibited from editing, modifying or otherwise altering the Videos; provided, however, the Licensee may exhibit the Videos in its entirety or in excerpts thereof.
. . .
Licensee will return the videos to Disney, at Licensee's sole expense, immediately upon Disney's request therefor.
From 1988 to 1993, plaintiff would typically send a form request letter to BVHE for trailers for specific home releases to be incorporated into a particular videotape compilation for in-store exhibition, and BVHE would respond by sending the requested trailers and a confirmation letter indicating its authorization to plaintiff to use the three-quarter inch broadcast quality videotape masters of trailers of certain motion pictures. (Video Pipeline Distribution/Production Manager Anne Green Dep. Tr., Defs.' App. Ex. H, at 38-40; BVHE Designation Letters, Pl.'s App. Ex. J.) The parties agreed that the trailers would be used in store locations, for example, as confirmed by a letter from Richard Lesse:
This letter confirms our approval...
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